Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  December 31, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

• Sections 1, 2, 3, and 45 Failure to Function Refusal – Widely-Used Message
• Identification of Services Requirement

 

Sections 1, 2, 3 and 45 Failure to Function Refusal – Widely-Used Message

 

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s services and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.  See In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and automobile parts because the mark would be perceived merely as an “everyday, commonplace safety admonition”); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715-16 (TTAB 1987) (holding PROUDLY MADE IN USA not registrable for electric shavers because the mark would be perceived merely as a common message encouraging the purchase of domestic-made products); TMEP §1202.04(b). 

 

Terms and expressions that merely convey an informational message are not registrable.  In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether the term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public.  In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006); TMEP §1202.04.  “The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

The attached evidence from Merriam-Webster Dictionary shows that “WELLNESS” means “the quality or state of being in good health especially as an actively sought goal” and that “PAYS” means “to return value or profit to”.  See http://www.merriam-webster.com/dictionary/wellness; http://www.merriam-webster.com/dictionary/pays.  Thus, the wording “WELLNESS PAYS” means conveys the message that promoting good health—or wellness—can return value to employers.  Further, the attached Internet evidence from the following sources shows that the wording “WELLNESS PAYS” is commonly used to emphasize the cost savings associated with wellness programs:

 

• http://www.hinda.com/recognition-solutions/workplace-wellness

 

• http://infograph.venngage.com/publish/db02fcbe-1f38-4e21-bda2-1ace15fe3870

 

• http://ceoblog.ntca.org/wellness-pays/

 

• http://content.chghealthcare.com/chg/ext_benefits_2018/BEN043_WellnessPayBrochure2018_rw_v4.pdf

 

• http://books.google.com/books?id=92RhDwAAQBAJ&pg=PA558&lpg=PA558&dq=%22wellness+pays%22&source=bl&ots=Pjp8iWJOAa&sig=ACfU3U1h_lJk4tHjMd2pjiFijMkQUFCGZg&hl=en&sa=X&ved=2ahUKEwiyn8bLneDmAhUPyFkKHctUCiA4RhDoATADegQIChAC#v=onepage&q=%22wellness%20pays%22&f=false

 

• http://www.idahofallsmagazine.com/2017/11/wellness-pays

 

• http://www.barnesgroupbenefits.com/health-wellness/wellness-express/april-2018

 

• http://books.google.com/books?id=6XIUbUzhvxUC&pg=PP50&lpg=PP50&dq=%22wellness+pays%22&source=bl&ots=rNyevGmra_&sig=ACfU3U20X4BSV7DJfOFjmO7zME3EjawOBQ&hl=en&sa=X&ved=2ahUKEwiJ84a2neDmAhWJxFkKHXs-ChE4KBDoATACegQIChAC#v=onepage&q=%22wellness%20pays%22&f=false

 

• http://www.employeebenefits.ri.gov/documents/state-of-ri-wellness-brochure-2019.pdf

 

• http://ohsonline.com/Articles/2013/03/01/Wellness-Pays.aspx.

 

Because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s services but rather as only conveying an informational message.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. 

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229.  Nor will submitting a substitute specimen overcome this refusal.  See TMEP §1202.04(d).

 

If applicant responds to the refusal, however, applicant must also respond to the requirement set forth below.

 

IDENTIFICATION OF SERVICES REQUIREMENT

 

The identification of services must be clarified because it is indefinite, overbroad, and/or otherwise unacceptable.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Specifically, applicant must clarify the wording “arranging and conducting programs to incentivize and encourage insured customers to become and remain active for the purpose of promoting and supporting better overall health” because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make sufficiently clear what the nature and/or purpose of the services are.  Further, this wording could identify services in more than one international class.  For example, business administration of wellness programs intended to lower health care costs are services classified in International Class 35 and arranging and conducting incentive award programs to encourage the frequent, continued and effective practice of physical exercise are services classified in International Class 41. 

 

If referring to services in International Class 35, applicant may substitute the following wording, if accurate:  Business administration of wellness programs, namely, arranging and conducting programs intended to lower health care costs by incentivizing and encouraging insured customers to engage in health, wellness, and nutritional changes to improve overall health”.  If referring to services in International Class 41, applicant may substitute the following wording, if accurate:  “Arranging and conducting incentive award programs to encourage the frequent, continued and effective practice of physical exercise”.

 

Applicant may adopt the following identification, if accurate:

 

Class 35:         Business administration of wellness programs, namely, arranging and conducting programs intended to lower health care costs by incentivizing and encouraging insured customers to engage in health, wellness, and nutritional changes to improve overall health

 

Class 41:        Arranging and conducting incentive award programs to encourage the frequent, continued and effective practice of physical exercise

 

Stylized text indicates changes.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

advisory – Multi-Class Application Requirements

 

The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

*          *          *          *          *

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Matthew Tully/

Matthew Tully

Trademark Examining Attorney

Law Office 105

(571) 270-5943

matthew.tully@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 31, 2019 for

U.S. Trademark Application Serial No. 88628567

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Tully, Matthew

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 31, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”